ELECTRIC BOOT & SHOE FINISHING CO. v. LITTLE et al

(Circuit Court of Appeals, First Circuit. June 13, 1905.)

No. 568.

PATENTS NOVELTY-PROCESS OF FINISHING BOOT AND SHOE SOLES.

The Crooker process, reissued patent No. 11,144, claim 1, for a process of polishing and finishing sole and heel edges and other parts of boots and shoes, is void for lack of patentable novelty in view of the prior art. Appeal from the Circuit Court of the United States for the District of Massachusetts.

For opinion below, see 75 Fed. 276.

Benjamin Phillips and Elmer P. Howe, for appellant.
Oliver R. Mitchell, for appellees.

Before PUTNAM and LOWELL, Circuit Judges, and BROWN, District Judge.

BROWN, District Judge. Claim 1 of letters patent No. 11,144, to William W. Crooker, dated February 10, 1891, is:

"(1) The improvement in the art of polishing and finishing sole and heel edges and other parts of boots or shoes, which consists in dyeing said parts or surfaces black and treating the said surfaces with wax or other resinous or waterproof compound, and polishing the same by contact with a rapidly moving yielding surface, substantially as described."

The complainant contends that this claim is for a novel and patentable process.

To color the surface of a material, and then to wax it and polish it by hand with a cloth or soft pad, is a proceeding so common that it requires satisfactory evidence to show that it was novel or involved invention to apply it to the finishing of boots and shoes. The complainant's argument is skillfully framed, and is based upon evidence produced for the purpose of showing the practical value of complainant's mode of finishing, and the previous attempts and failures of persons skilled in the art to attain a result as satisfactory as that of the complainant.

It is said that, in the prior art, the leather was colored by sediment stains which were not a true black; that to prepare the leather to receive such stains its fiber was raised by buffing; that when the stain had been applied it acted upon the leather partly as a true dye and partly by depositing insoluble particles on the raised fiber of the leather; that, in order to incorporate the sediment or insoluble parts of the stain with the leather and to bring out the final color, it was necessary to burnish the leather with a hard tool before the surface was ready for the wax polish; that in factories the burnishing step required expensive machinery, and had to be performed while the leather was in "temper," or in a suitably moist condition; that the use of a true dye prepared the leather for immediate polishing, and rendered unnecessary the usual step of burnishing, with its attendant inconvenience and expense for machinery.

The complainant contends, also, that the use of a dye obviated the necessity for preparing the leather by buffing, or raising its surface, and that this was a substantial advance in the art. This feature is not referred to in the specification, and we can attach little importance to it, in view of the patentee's testimony. He was asked, "As ordinarily practiced in the use of your process, is the preliminary buffing or sandpapering omitted?" and replied, "It is not."

Was it novel, and did it constitute invention, to dispense with the operation of burnishing?

A final polish secured by applying wax and rubbing it with cloths, pads, or brushes seems to have been as common a feature in the finishing of boots and shoes as in the polishing of floors or furniture. Novelty must be sought, therefore, in the mode of preparing the surface for polishing. The argument comes, in substance, to this: Crooker prepared his surface with an insoluble black dye, while in the prior art the surface was prepared by staining and burnishing. Crooker, however, was not the first to omit burnishing in preparing the surface of leather to receive a wax polish. The evidence shows clearly that leather had been treated with colored stains or dyes and immediately given a wax polish without resort to burnishing to incorporate the color with the leather, or to bring out the final color. Assuming that dyed leather is as well prepared to receive a wax polish as leather stained and also burnished, it is still true that leather was commonly prepared for polishing by the use of stains or colored dyes, without burnishing. Mr. Folsom testifies that he used black coloring matter made of alcohol, water, logwood, and tincture of iron, and immediately finished the leather with a wax polish for the purpose of avoiding the expense of burnishing. We think the evidence such as to preclude a finding that Crooker was the first to suitably prepare the surface for polishing without resort to burnishing.

The complainant concedes that, in the use of sediment stains, the final color was produced partly by a dyeing action and partly by fixing insoluble particles to the fiber and rubbing them in with an iron. When the burnishing was omitted, however, as was the case, not only with the black stain described by Mr. Folsom, but with various colored stains and dyes, the process was substantially that of the patent in suit, so far as the avoidance of the expense of burnishing is concerned. It is, of course, impossible to avoid anticipation by limiting the claim to an aniline dye, or by saying that a blueblack dye is not a black dye. The black stain of Folsom was used by him simply as a black dye. The various other stains which were not burnished were used simply as dyes, and, although the color might have been different from or inferior to the complainant's, we find no patentable novelty in the mere substitution of a superior dye in a well-known process of finishing shoes without burnishing. We are of the opinion that, in view of the prior art, there was no patentable novelty in what is claimed. The evidence as to commercial use and as to the importance of the Crooker process does not aid the patent. It clearly appears that what is done in practice is

something very much more specific than that claimed, and that the superior result of the so-called Crooker process is due to the use of a particular dye, specially selected wax, and a particular kind of polishing appliance which the patentee says "is necessary in order to be practical." Upon evidence as to the process actually used, as distinguished from that described in the patent, the Circuit Court was of the opinion that the specification was, for the purpose of deceiving the public, made to contain less than the whole truth relative to the invention, and hence that the patent must be held to be invalid under Rev. St. § 4920 [U. S. Comp. St. 1901, p. 3394]. We find it unnecessary to determine this question, since it is sufficient, for the purposes of the case, to say that the process described in claim 1 did not involve a patentable novelty.

On the whole, as dyes of all kinds, including aniline black, had previously been in public and general use for dyeing all kinds of materials, there was no invention in applying them, as distinguished from stains and pigments, to leather. It is admitted that picric acid is a dye, and had previously been applied to leather for obtaining a yellow color, the process of finishing being substantially the same as that disclosed in the patent in issue; and there could be no invention in substituting for picric acid aniline black after it came on the market. Indeed, from every point of view, what is claimed was within the common arts as generally practiced before the alleged invention of claim 1 of the Crooker patent.

The decree of the Circuit Court is affirmed, and the appellees recover costs of appeal.

CURTAIN SUPPLY CO. v. NORTH JERSEY ST. RY. CO.

(Circuit Court, D. New Jersey. May 9, 1905.)

1. PATENTS-INFRINGEMENT-SHADE-HOLDING

DEVICE.

The Forsyth patent, No. 559,446, for a shade-holding device for use chiefly on the shades in car windows, discloses invention, and is valid, out, in view of the prior art, is limited to the self-righting feature which is its essential element, by means of which the bottom of the shade, when pulled or pushed out of the horizontal, will automatically reassume such position. As so construed, held not infringed by the device of the Hoyt patent, No. 676,557.

2. SAME.

The Paterson patent, No. 659,315, for a shade fixture, claims 1, 2, and 3, construed, and, as limited by the prior art, held not infringed. In Equity. Suit for infringement of patents. On final hearing. C. C. Linthicum and L. S. Bacon, for complainant. J. Edgar Bull and Worth Osgood, for defendant.

GRAY, Circuit Judge. The bill filed in this case charges the infringement of claims 1 and 2 of letters patent No. 559,446, dated May 5, 1896, and issued to Henry H. Forsyth, and Henry H. Forsyth, Jr., for shade-holding device, and claims 1, 2 and 3 of letters patent No. 659,315, issued October 9, 1900, to James W. Paterson, for shade fixture. The defendant is sued as the user of the patented

device, the same having been manufactured by the National Lock Washer Company, of Newark, New Jersey, which company, by stipulation, is defending the suit. Complainant's title to both patents is also admitted by stipulation, as well as the use of the alleged infringing device and the corporate character of the parties complainant and defendant. The complainant thus describes the device of the Forsyth patent:

"This patent (which will be referred to as the 'Forsyth patent') relates to a device for holding a window shade or curtain in any desired position of adjustment, within the limits of the window frame, and the device is most frequently employed on the shades or curtains of railroad and street railway cars. These shades are usually of heavier cloth than the ordinary shade cloth which is used in houses, and as the cars are subjected to vibrations and occillations of a more or less violent character, and as the curtains or shades are sometimes drawn down when the windows are open, the shadeholding device must be of such character as to hold the curtain against the tendency of these forces to disturb its position. These curtains or shades are attached at one end to a shade roller containing a spring which exerts a constant tendency to turn the roller in a direction to wind up the shade thereon, and which roller differs from the one commonly used in house curtains or shades in the fact that the holding dogs, which lock the shade roller in position when it comes to rest, are omitted.

The shade-holding device is intended to hold the lower edge of the shade at the desired elevation, against the oscillations, vibrations, and other external forces incident to the movements of the car, the force of the wind when the window is open and the curtain is lowered, and also against the constant tendency of the shade-roller spring to wind the shade upon the roller. Further, the shade-holding device must be of such character that the shade may be quickly adjusted by the passengers upon these cars.

In the following cuts (which are figures 2 and 3 of the drawings of the Forsyth patent) the construction of the Forsyth fixture and its relation to the shade and window frame, are clearly shown:

The shade stick consists of a hollow rod (11), which is enclosed within a pocket in the lower end of the shade (10), and contains two sliding rods (13), whose inner ends are provided with pinch-handles or pendants (22), and whose outer ends carry elongated heads (16), provided in their faces or vertical edges with friction tips (26). The extremities of these heads are rounded

on their outer corners, as shown in figure 2 of the patent, but may be provided with rollers (27), as shown in figure 3 of the patent. The details of construction of the heads are more clearly shown in figures 4 to 6, inclusive, of the drawings of the patent. Coiled springs (14), located within the hollow shade stick, and having a bearing thereon and upon the shanks of the heads, tend to thrust the latter out into contact with the window frame, which latter is provided with vertical grooves in which the heads move so as to hold the shade parallel to the window.

The friction tips are of such character and the springs of the fixture are so proportioned as to hold the shade in the adjusted position, and this holding function is automatically effected. To adjust the shade to a higher or a lower position, the pinch handles or pendants are provided, and by proper manipulation the shade can be raised or lowered and held in any adjusted position with the shade stick or bar parallel to the bottom of the window frame. Experience has proven, however, that this is not the universal or even the usual mode of adjusting the shade. The ordinary passenger seizes the lower edge of the shade, usually near one end, and attempts to pull it down or push it up, with the result that the shade stick is likely to be placed in a canted or oblique position, and in the attempt to restore the shade to a horizontal position, unless special provisions are made, the holding heads will escape from the grooves, and the lower edge of the curtain freed, so that it is violently rolled up by the roller spring."

Claims 1 and 2 of this patent, of which infringement is charged, are as follows:

"(1) A self-righting holding mechanism for spring-actuated shades comprising, in combination with the shade, heads carried thereby, said heads having separated bearing or contact points of diverse frictional holding power and arranged in such relation to each other that when the margin of the shade is moved from a horizontal position the bearing-point of least resistance will be engaged and the bearing-point of greater frictional power wholly or partially withdrawn from contact whereby the shade may resume its normal horizontal position, substantially as described.

(2) A self-righting holding mechanism for spring-actuated shades comprising in combination with a shade, heads carried thereby, said heads having projecting friction tips in the vertical faces thereof, and antifriction-rollers journaled in the extremities of said heads on opposite sides of the friction tips, said heads and rollers adapted to bear upon the same opposing surface whereby when the shade is moved from a horizontal position, the roller will be brought into contact with such surface and the tip wholly or partially withdrawn from contact and the shade resume its normal horizontal position when released from the moving force, substantially as described."

That the self-righting capacity of this device is the essential feature of the invention, is apparent from a brief survey of the prior art. The patentee, in his specifications, refers to only a certain portion of the prior art, which was embodied in the Hall patent of 1891. This patent shows rods slidably mounted in a pocket or tube in the lower margin of the shade, and carrying friction tips at their outer ends, adapted to traverse grooves in the jambs of the windows, and held against the back of said grooves by the outward pressure of the coiled springs actuating said rods. These friction tips, not much wider than the end of the rod, are of rubber, and are seated in a metal pocket at the end of said rods. The friction of these rubber tips on the back of the grooves, serves to hold the shade with the lower edge horizontal against the upward pull of the spring roller at the top, the shade being easily lowered or raised by pressing together the pinch handles attached to the inner ends of the spring actuated rods, thus withdrawing the friction tips from con